Ex Parte Boyle

Board of Patent Appeals and Interferences

Jun 13, 2012

11215907 (B.P.A.I. Jun. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/215,907 08/31/2005 Kenneth James Boyle 25816-0027 6233
29052 7590 06/13/2012
SUTHERLAND ASBILL & BRENNAN LLP
999 PEACHTREE STREET, N.E.
ATLANTA, GA 30309
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
MAIL DATE DELIVERY MODE
06/13/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH JAMES BOYLE
____________

Appeal 2011-000710
Application 11/215,907
Technology Center 3600
____________

Before: ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000710
Application 11/215,907

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-5, 7-12, 14-16,
and 27-32. We have jurisdiction to review the case under 35 U.S.C. §§ 134
and 6 (2002).
The claimed invention is directed to enabling users to create and
deliver sponsored messages to user-specified, targeted audiences (Spec.,
para. [0001]). Claim 1, reproduced below, is further illustrative of the
claimed subject matter.
1. A method for placing media content, comprising:
creating, in a content creation module, media content in
response to at least one user command to select among one of
generating new content or revising previously created content;
receiving. at a server, a user request to identify available
media space, where the user request includes one or more user-
identified search criteria, and wherein the available media space
represents media space available for purchase by the user for
placing the media content created in the content creation
module;
determining, at the server, the available media space that
meets the one or more user-identified search criteria; and
displaying the available media space to the user for
purchase.

Claims 1-5, 7-12, and 27-32 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Del Sesto (US 6,985,882 B1, iss. Jan. 10, 2006) in view
of Eller (US 7,038,637 B1, iss. May 2, 2006); claims 14-16 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Del Sesto in view of Eller and
Badros (US 2006/0149623 A1, pub. Jul. 6, 2006)1; and claim 29 stands

1 The rejection of claims 1 and 27 under 35 U.S.C. § 112, 2nd paragraph, is
withdrawn (see Exam’r’s Ans. 3).
Appeal 2011-000710
Application 11/215,907

3
rejected under 35 U.S.C. § 103(a) as unpatentable over Del Sesto in view of
Eller and Piller (US 2005/0165638 A1, pub. Jul. 28, 2005).
We AFFIRM.

ANALYSIS
Independent Claims 1 and 27
We are not persuaded the Examiner erred in asserting that a
combination of Del Sesto and Eller renders obvious independent claims 1
and 27 (App. Br. 10-14). Appellant asserts that Eller’s “prepackaged
software, such as PowerPoint™, or a software package [that] may be
downloaded from the billboard provider” cannot correspond to the recited
“content creation module,” because such software is a full software program
or application, and not a module (App. Br. 11-12).
As an initial matter, we note that the Specification does not define a
module. Accordingly, Appellant has not shown at what point a module
becomes a program/application, as any program/application could be a
“module” subsumed within another program/application. For example,
PowerPoint™ could be a “module” within Microsoft Office.
In the absence of such guidance or definition in the Specification, we
agree with the Examiner that Eller’s “prepackaged software,” and especially
the software package downloadable from the billboard provider, corresponds
to a “module” under a broadest reasonable construction. See In re Am.
Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (“[d]uring
examination [of a patent application, a pending claim is] given [the] broadest
reasonable [construction] consistent with the specification, and . . . claim
language should be read in light of the specification as it would be
Appeal 2011-000710
Application 11/215,907

4
interpreted by one of ordinary skill in the art”) (internal citation and
quotations omitted).
Appellant further asserts that “neither the cited passage, nor any other
passage, in Eller suggests that the [same] type of media or advertisement can
be created ‘in response to at least one user [command]’” (App. Br. 12).
However, column 3, lines 37-44 of Eller specifically disclose the user
creating content using software, which would be via user commands within
the software.
Appellant also asserts that “the Examiner’s motivation in combining
the cited references is gleaned solely from the applicant's specification”
(App. Br. 12-14). However, the Examiner asserts that “it would have been
obvious to one of ordinary skill in the art at the time of the invention to
modify Del Sesto to allow the user to create an advertisement as taught by
Eller in order to customize the information or promotion to be displayed,”
and specifically cites column 3, lines 37-44 of Eller for disclosing this
rationale (Exam’r’s Ans. 5). Accordingly, the Examiner’s rationale for
combining is from Eller and not Appellant’s Specification.

Dependent Claims 14-16 and 29
Appellant asserts that neither Badros nor Piller cures the deficiencies
of independent claims 1 and 27, from which at least one of claims 14-16 and
29 depend (App. Br. 15-17). However, because there are no deficiencies to
cure, we will sustain these rejections.

Appeal 2011-000710
Application 11/215,907

5
DECISION
The decision of the Examiner to reject claims 1-5, 7-12, 14-16, and
27-32 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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